Patent Agent Privilege Expands Its Reach

• Author: Laura W. Givens
• Pages: 24-25

Published in Litigation News Volume 45, Number 4, Summer 20 20. © 2020 by the Ameri can Bar Association. Re produced with per mission. All rights re served. This info rmation or any porti on thereof may not be c opied or disseminated in any

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its rationale, b ut others believe it

might open the do or for more de-

mands for attorn ey fees.

The case bega n as a suit between

two attorneys. In M cCarthy v. Taylor,

a grantor created a livi ng trust nam-

ing his romantic inte rest as a second-

ary trustee. T he trust named Gerald

McCarthy, an attor ney, as a second-

ary successor trustee. Following the

death of the grantor, anoth er at-

torney presented Mc Carthy with

an amended tr ust document nam-

ing that attorney, Mar vin Gray, as the

successor trustee.

This led to litigation wi th McCarthy

disputing the vali dity of the amend-

ment. Gray won that li tigation, and the

Illinois Cour t of Appeals denied leave

to appeal. Not d eterred, McCarthy

f‌iled a second lawsu it against Gray, al-

leging breach of f‌i duciary duty and

tortious inter ference and claiming that

Gray made false s tatements and pre-

sented “mislea ding evidence” against

McCarthy in th e f‌irst case.

Following the dismi ssal of the sec-

ond case, Gray f‌i led a motion for

sanctions , including a request for

attorney fees an d costs. The trial

court awarded G ray almost $10,000

in attorney fees on th e basis that

McCarthy ’s f‌iling violate d Illinois’s

corollary to Rule 1 1 of the Federal

Rules of Civil Proce dure.

The Illinois Co urt of Appeals af-

f‌irmed the seco nd dismissal but va-

cated the attorney fe es award. Gray

appealed to the I llinois Supreme

Court, which a pproved the award. It

found that a pro se atto rney plainti

had f‌iled a frivolo us lawsuit, and this

justif‌ied the award . The punitive na-

ture of the award was pivotal to th e

court’s ratio nale. But the decision

was not unanimo us. Two justices f‌ile d

separate opinio ns that concurred in

part and diss ented in part.

Some obser vers agree with t he

majority dec ision. “There is no real

reason that simpl y because you are

an attorney, you should fo rgo the op-

portunity to ob tain attorney fees,”

says Brian A. B erkley, Philadelphia,

PA, cochair of the Se ction of

Litigation’s Busin ess Torts & Unfa ir

Competition Com mittee. “Our time is

valuable, and simply because you are

the client, that do es not make it any

less valuable.”

One dissentin g opinion agreed

with this sentiment , but noted the pro

se attorney defen dant could receive

reasonable exp enses in the form of

“loss of income at tributable to the

time he spent away from h is prac-

tice defending against this frivolous

lawsuit.” Other Section leaders agree

with the dissent ’s additional point

that no attorney-client relationship

was formed, an d so no fees should be

granted. “I wou ld have never thought

to go after my attorney fe es,” says

Tracy A. DiFillipp o, Reno, NV, cochair

of the Section’s Pretr ial Practice &

Discovery Comm ittee. “I guess you

charge yoursel f?” she asks.

Another disse nt noted it was di-

cult to distinguish b etween the inten-

tion behind all owing attorney fees in

the frivolous lawsu it context versus

other fee-shifting regimes. DiFillippo

agrees, obse rving that the majori-

ty opinion ope ns the door for attor-

neys to seek more novel ways to ear n

attorney fees in ca ses in which they

would not otherw ise receive compen-

sation for work they pe rform.

For Berkley, it comes dow n to a

party’s righ t to choose its own re p-

resentation for specif‌ic litigation and

not lose remedi es as a result of the

selection . In Berkley’s view, “If I start

getting pena lized for doing that, it

becomes problematic.”

NOTE: The Suprem e Court of

Illinois made m inor revisions to its

original opinion following a motion

for rehearing i n October 2019. The

f‌inal opinion , therefore, has yet to be

released, an d the opinion remains

subject to revision o r withdrawal.

Patent Agent

Privilege Expands Its

Reach

By Laura W. Givens, L itigation News

Contributing Editor

A U.S. distr ict court has exp anded

the reach of the patent a gent privi-

lege, which prote cts some comm uni-

cation between non-attorney patent

agents and the ir clients. However,

the court held t hat a robust privi-

lege log is nece ssary when a p arty

asserts the patent agent privilege.

ABA Section of Liti gation leader s

warn litigators that th ey should pay

careful attenti on to the contours of

the patent agent pr ivilege in their

privilege logs o r risk waiver.

In Luv N’ Care v. Willia ms

Intellectual Property, Luv N’ Ca re

sought an order f rom the U.S. District

Court for the Di strict of Colorado to

compel a patent ag ent, a nonparty to

the suit, to produce d ocuments and a

privilege log re sponsive to a subpoe-

na. The unde rlying litigation involved

a patent dispute bet ween Luv N’ Care

and Eazy-PZ, L LC. Eazy- PZ hired the

patent agent to prose cute two pat-

ents, and Luv N ’Care subpoenaed the

patent agent.

In response to the su bpoena, the

patent agent prod uced a privilege

log and, shor tly before a hearing on

a motion to compel, a n amended log.

At the hearing, th e court ordered the

patent agent to ame nd its log for a

third time to match the cate gories

sought in Luv N’ C are’s subpoena.

The court noted th at the patent

agent privileg e was f‌irst recognized

in 2016 in In re Qu een’s University at

Kingston, decided by the U.S . Court

of Appeals for the F ederal Circuit.

That decision is ro oted in the U.S.

Supreme Cour t’s ruling in Sper ry v.

Florida ex rel. Flor ida Bar. There, the

Court found that the preparation and

prosecution of patent applications

constitutes the pra ctice of law, even

when conducted by nonattorneys.

“Over 50 years ago , in Sperry, the

Supreme Cour t had established that

patent agents have a un ique role

in American law,” expl ains Angela

Foster, North Brun swick, NJ, former

cochair of the Sec tion of Litigation’s

Intellectual Pro perty Litigation

Committee. “ Patent agents are not

attorneys but are au thorized to prac-

tice before the Unite d States Patent

and Trademark Oce (USPTO),”

Foster adds.

The Colorado d istrict court noted

that the patent age nt privilege ap-

plies to communic ations that are rea-

sonably necessary and incident to

the preparation a nd prosecution of

patent applicati onsor other pro-

ceedings befo re the USPTO. The

court noted that , since Queen’s

University, every federal cour t that

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